By Ronald Slusky
Ronald Slusky mentored dozens of attorneys in “old school” invention analysis and claiming principles over a 31-year career at Bell Laboratories. He is now in private practice in New York City. This article is adapted from his 2007 book “Invention Analysis and Claiming: A Patent Lawyer’s Guide.” Ron’s two–day seminar based on the book will be given this month in Santa Clara and Philadelphia, followed by Washington D.C., Dallas and New York. For details, see www.sluskyseminars.com Ron can be reached at 212-246-4546 and rdslusky@verizon.net.
January’s column2 introduced the idea of claim diversity. This is an approach to constructing the overall claim suite to address problems that may not surface until after the patent issues, when it may be too late to do to much about them. For example, unnecessary elements or unduly narrow terminology can give rise to infringement loopholes. Limitations whose meaning seemed perfectly clear to the claim drafter and the patent examiner during prep and pros might later be argued to be indefinite by the Opposing Team.3 Claim-invalidating prior art may surf...
